patent· waS and intentional as to warlliq.t the CoU:i1"ubder. the act of Fepruary 4, ,1887', upon the of the 8250,as i#ayed in the 'It','rollows fJ'lm:I,the that oompl8.inant isei)titlec.r toJherelief his1>ill;, and a decree in }tiS, T,he l1efendantitillbe'enjoined from infringement, be,cbarge9 jvith the of $250, will be mxe(f with {he costs of thasuit, and · r6ference for an account tQli profits :.by by comI

,Defendanf. IrIscalieth'" I),thar4.ship to itself or to ,de9l'6l\,J:Ilay a gradual rem!lval from its cars of the .the public" since patented artldle, lib a. cause the Mt'hdta\'9'alfTom service of a large amount of rolling.tod!t,at anyoll$\1me; alI4fOJ! that a,ll;lountof rolling stock rell.uired for its maY be proved by'aftldavlts or the oral examInation ot1't:1i .uperlnt6ndent as'D1'a8ter mechanic. ' ,
','

IbEquity.'Soit b, the Camtibell Printing-Pr98$ & Manufacturing Compan y against the Manhattan Railway Company for infringement of a patent. " injiuiction and an accounting. " HOhaB.De 'Hart Brower(for complainant. DaM, Short &- Townaena; for defebdant.
LACOMBE; :Circuit Thecomplainllnt is the'owner ·of letters patent No. 401,680, granted April 16, 1889 1 to Edward S. Boynton for a'II new and useful 'improvement in ves for pneumatic' pipes or tubes.» The second claim lof the pa.tent is: ' "(2) In M1'nbin,ation with an externalpivoted valve, a self-closing device, cohslsting of Ii c'omp'rE'.8sive helical spring held within s tubular guide, formed upoil or attl\ched to Bald vliJve, between ant! f'nd of said guide and a stop at tbe'pivotal point, of thavalve, sUbstantiallyss:and for the purposes set forth."

This claim' was, sustained by Judge COXE in CampbeU Printing-Preas if Manuj'g 00· .v. EamesVacuum (A).,44 Fed; Rfp.64, and disclaimer as to ,the first c1ajm was duly entered in the patent-office prior to the bringing of this suit. ,'The bill charges infringement of this second Claim, prays injunction and accoubting, anu expressly waives anS\'9'ar under oath. A 'injunction was refused. Campbell Printing-Preas if ¥anuf'g (A).v. Ma:nhattan Ry. Co., 47 Fed. Rep. 663. The case now coines up for final hearing upon bill, answer, and replication. The answer (unverified)a.dmits tbe grant of the letters patent, and complainant'stitle thereto, a.nd that they are good and valid as to the second claim thereof. Rfurtheradmits that'since April' 16,1889, (the date of the issue of the patent,) delEmdant has used couplings embodying the invention covered by the second claim, and that the number. so used is 2,678, on 1,017 cats and 322 locomotives, some of said couplings having been applied before April 16, and others from time to time since. It further avers that the invention is of trifling, if any, pecuniary value; that complainant has never made, used, or sold' the patented invention, 'and has never licensed anyone to make, use, or sell the same; that the defebdantuses it upon cars constantly employed by it in the transportation arid that an injunction would be a hardship to defendant, would seriously inconvenience it in its passenger Carrying

932

vol. 49.

service, and would be of no benefit to complainant. It offers to submit t<:Htfinaldecree for injunction againstthe>use of any addiiionalinfringing couplings. For the past and future undisturbed use of those w,hicb upon, without leave or license of the owner of the admitted violation of the 'rjghts secured to such owner therebl' it also offers to submit tOll. judgment for nominal damages. it To the complainant's application for anaccountiilg before II; if! objected that it has not given specific evidence of sustained. But uI1der the pleadings it is riot necessary for the complainant to give is admitted." and from infringement damage such ,proof. and deprivation of profits ,axepresuIh Woo8ter v.Muser ,20 Fed. Rep. 162. To what extent" and or sllbstaptia1, is a matter to be settled on the accounting. Complainant has shown all that is neceSSary to a decree sending the case to a master, wl:\en it has:shown infringement of a valid patent owned by itself. BrickiU v. Mayor, 7 Fed. Repc'.\7:9. The decision of Judge BROWN inthe case at bar (48 Fed. Rep. 344) did not, pass upon this point. It only settled a question of practice, holding that a motion at chambers was not proper procedure. The contention of the defendant that, because it is willing to pay nominal damages fot Pllst infringement; ,a1;l injuD(}tion to restrain future infringement should'llot issue, is unsoulld. In Bird8ell v. ShalJiol, 112 U. S. 487, 5 Sup. Ct. Rep. 244, the supreme cQurt ,held inapd using in fringer does not, by paying infringement ofa patent, acquire any right himself to the future Us.e of , the'machine, On the contrary he may j in addition to the pay'mentof damages for past infringement, be restrained by injunction from further 'Use, [citing See" also, v. Spangenberg" 15 ,Fed. :Rep.,813; Bragg; v. Gitil' 'of Stockton,. 27 Fed. Rep. 509. The proposiby the, defendant is prl;i.ctically this: If aninv,entor, whoee, in. :locomotive machinery" although' valid" ie of but trifling value to l:\'.common ,carrier, himself thinks it valuaple, (l.nd·therefore de.mandsB licen.se fee,J9,rits use, higher than such commqll carriers as would like'to use it are willing to pay, they may nevertheless appropriate his invention to their use, may vlace it on theircars aI1-d locomotives withl:mt h,is permis'sion, and may .continueto use it till it. wears out, without,interference, on, Jhe ground tJ1at to remove it would inconyenience the public; and tha{'forsuch enfcircecilicense they should be made to PaY, not the feetlle inventor asks, but such sum as a master of the court may think t1le hwentionis worth. Baldly stated, the contention is that, "hen asks a price for the use of his patent higher than usel'S wish tp pay, and ,refuses to license its use except at such price, it may be confiscated and sold to whoever wants it, at a price to be fixed by a States circuit court. Whether or not such a qualification of the ulOnppoly secured by letters. patent would be legislation is immaterial; it ianot now on,th" statute book, nor is there found controllingauthoritv in its support among the cases cited by the defendant'll counf¥l1

ed ., .

,CAMPBELL PRINTING-PRESS &, MANUF'G CO. II. MANHATTAN RY. CO.

933

In Barnard Gibson, 7 How. 657, the parties claimed conflicting interests as assignees of a patent, and there was thus an issue raised in the case which the circuit court had determined adversely to the defendant; but his right toreview that decision, by appeal from final decree whenever it might be entered, still remained. The supreme court declared that it was a, "hardship" sufficient to have deterred the circuit court from grf!.nting an injunction that the case was not ended in that court, 80 that there might be a final decree' for the defendant to appeal from, and perhaps secure a reversal of the finding that complainant's title was gQod. Here no suoh is raised. Title, validity of the patent, and in,.. fringement are establiahed, not by. the decision of this court, but fendant's own admissions. on the record, and no appeal could possibly result in a differentcouclusion. In Pullman v. Railroad Co., 5 Fed. Rep. 72, defendants. were strenuously a.sserting prior use andnon·infringement. In }foe v. Adverti8er Co., 14 Fed. Rep. 914, it was parent that to make a change in the printing-press on which the daily newspaper -of the defendant was printed would greatly embarrass the usual course of its business. Moreover, the defendant was contesting the validity of the patent, and, though the circuit court sustained it, there wa3a possibility of reversal. In Howe v. Morton, 1 Fish. Pat. Cas. 601, the validity of the patent was vigorously assailed. In Stainthorp v. Humi8t1:m, 2, Fish. Pat. Oas. 311, the-fact of infringement was contested. ,In Morris v. Manufacturing Co., 3 Fish. Pat. Cas. 67, the court did not "think that complainant's title was entirely clear." The patent had only six month,s to run, and injunction would close defendant's mill for that whole period, throwing many hands out of employment. In Wells y. Gill, 6 Fish. Pat. Cas. 89,tbe decree (in another case) which sustained the validity of the patent was before the.supremecourt on appeal. Judge STRONG, though refusing a,n, injunction, expressly stated that. had that decree been acquiesced iU or affirmed by the supreme court, he would have awarded one. All of. these cases (except Barnard v. Gibson,8Upra) were ,applications for preliminary injunction, as were also Colga,te ,v. Telegraph Co., 4 Ban. & A. 415, and New York Grape Sugar Co. v. American Grape Sugar 00;,10 Fed. Rep. 837. Lowell Manufg;Co. v. Hartford Oarpet 00., 2 Fish. Pat. Cas. 475, is plainly an authority only under the facts of that particular case, which are stated too briefly in the reportto afford much information as to what the court did decide. In Forbush v. Bradford, 1 Fish. Pat. Cas. 318, Judge CURTIS refused a temporary injunction, where the same issues had been tried at law between the same parties, such trial resulting in a verdict for the plaintiff; but he did so on the express ground that a bill of exceptions had been taken upon points which involved the validity of the patent, and that, as the bill of exceptions was not frivolous, the litigation as to complainant's title was not in fact terminated, and it was necessary, in weighing the relative hardship of granting or refusing an injunction, to contemplate a decision adverse to complainant's title as a possible result. But the learned judge expressly added that, even. though the effect of an injunction would be to stop all the deffmdant's looms till the patented improvement could be re-

'.'

:"

' ',

moredjthat ,would not preveQUhe court from granting an injunctioh if the right;had been finally esttliblished at law. In the,elise at bar, where neither :va!idit,y, title;nor iPiringem$nt is questioned ,the complainant's right to its ,mqnopoly is finally estalilished..,'In v. Canal 3611.,injunctionwas:l'pfusel.l wh6re:defendants were using complainilfit's "imprOvement in' coupling' and steeringoanal-boats," on; thEf gtound that.the "allowance of anilljunction woula oause much' greater injury to the respondent than benetitllto,the eomllIainant. n, Defendants were contending that the: patent ,was ati:invalid reissue.' Although the circuit conrt did not sustain tha.tor the other defenses, the defendants still had their appeal, and it could;tlQt be beld tha.talL questions of 'Validity, title, infringement had been-finally determined. As no facts are stated in the report of the case, 'it does not appear what was the injury or benefit. bar the only injury to the defendant is the cost of other coupling; it expressly repudiated (on the former motion) anY'benefit from the improvement; insistinK that other couplingswhichit,w8s free to use were better than complainant's. By" refusing an injunction,' the ,court practically informs the complainant, and all who may wish to use its couplings, that; because it asks more for the improvement than they are willing to pay, it must nevertheless be content to see them appropriate it at a, price to be fixed hereatter by this court. On which side tpe balance of hardship in this case inclines seems not difficult·to determine·. The remarks of Judge GRIER in Sandersv. Logan,2 Fish. Pat. Cas.' 167, are purely obiter, the bill in that case being dismissed on the ground that prior use was shown. Besides, the learned judge evidently assumed that the license feet payment of which would be full compensation to the complainant for future as well as past trespasses, was a "fixed sum." Undoubtedly, where there is a given license fee which is paid by others for the use of all improveniEmt in some ','mill, manufaclocomotive; orsteam..engine," equity will not lend its aid to enable a patentee, by an injunction; practically against the whole apparatus, to extort a larger sum from some particular infringer who is prepared to pay the "given sum" for the privilege of using the improvement. But that is not this case. There is no "fixed· sum," for, there have, as yet, was stated on the been no actual sales of lieenses, other railroads argument) having followed' defendant's example,and appropriated the new coupling without payment or permission, expecting, apparently, by that means to be able 'to compel the complainant to accept much less than he would sell his license for, except under some such constraint, -perhaps a merely nominal sum,-for, although it seems to have kept putting his coupling on its cars, even after it had tested it by use, defendant yet insists that it is a wholly valueless improvement. The decision of Judge BLODGETT in Hoe v. Knap, 27 Fed. Rep. 204, fully sustains the defendant's· contention. r n that case the. owner of the manufaoturer of printing-presses,. which he did not patent was a keep in stock l but made to order. 'rhe patented device was asmaH part of the entire machine. As matter of fact, complainant had not up to

OAKPBELL PRINTING-f.B.ES$ &

CO.' 1'; 1lLUiflATTAN BY. CO.

9p5

that time sold any press embodying the improvement, because none had been ordered. for interest to hold the patent, and use it exclusively in presses of his own make, and hence had no regularJicense fee fodtsuse. Judge BLODGETT, however, at final hearing, refused an injunction against an infringer, holdiJlg, that, '''under\a'pll:tentwhich gives' a patentee a monopoly, heia' bound either to use the patent himself" or allow others to use it, -on reasOriabJe terms." No authorities for tbis proposition, howev,er, are cited in the opinion, nor is such a construction of thesfatute, ndes that a pawnteeshall, receive a gra1ltof the "exclusive right to make, use, and vend" his invention, s4p'p6rted bV argument. greatweight is always, to be given to-decisions of the circuit courts, they quesUon is 'in ,another :circuit. Id() ,not, therefore, feel, constrained .by this decision to it!! injunction; it &Sk$ more fora than defendant cares to pay; , , also notis8ue in!,ringing oouplings nowin:ulle by it are u/red in the service of the, puhlic, to the public. In Bli& v. Brooldyn, 4 Fish. ,was refused becal,1se ,the hosecqpplinga the daily use ofthe,city in the; prevention of fireaj:'and there ia6o, long line of authoritiea to the [email protected] nothing in the case at bar, beyond the bill'eassertion of the' defendant, to ahow.that an injunction properly regulated a8'to not be obeytld without irany way interfering with the service which defendant renderS, to' the, public as a common Itsooms to have 'experienced no difficulty ,at all in temporarily withdrawing its loQamotives audears from such service at suitable seasons, for a sufficient lengthoftimeto affix the complainant's copplings.Wby it lOay not,in like manner, remove them"does not appear. Complainant may take decree for account and injunction. The tetms of the injunction, proViding from how many cars aM locomotives the infringing couplings shall be removed each week, may be settled: on'noticej8nd if'dekndant';will at that .time preaentaffid!l'i'its showing the-character ,of (tb,e' work required, the amount of its'J!oUing stock in use and reserve, and its shop,facilities, there need he no, difficulty aboutls'tranging thete!'msofthe decree; or, if it be preferred, defendant, instead of affidavits, may present its superintendent or master mechanic to aid tbecourt in settlingtbe terms.
I ' '

9S1PAGB

hnERAL REPORTKB,

vol. 49.

WOVEN WIRE FENCE CO. ,. L.um.:

(OCrcuU' Oourt, E. D. Michigan. December 16, 189L)
... P4TBIml !'OR

In a'suit for infringement the introduction of the patent is prima.faou proof t.bat the patentee fa the original and first inventor, and the introduction of sub_ quent lettertl, under which the alleged infringing device ia made, does not ovel'cometh1ll presumption.

INVENTOR-PRBSUMPTIONS noM P.4TB1'l'1'.

.. B.urlD'-JOINT PATBNT.

" ,.'J;b.e issuaneeof a patent to two persons, as joint inventors, constitutes f)1'Im4 _ tbat the invention was joint. , ·The'mere faot that defendant has constructed or is constructing, in accordance with, a subsequent patent, machines whioh embody substantially the,&alIle devices ClOveted by complainant's patent, and whioh are claimed to bean infringl'lment, 111 auBlomnt to support the bfil When the answer admits that, if found successful, defendant intends to sell maohiJ)..es and territory.

oro

SUPPORT BILL.

'" &UB-ErrENT Oll CUlM -WIRB-FBNOB MACHINE.

DEIORIl'TION -olltB DEVIOB wrrtI SEPARATE :ll'mrOTIONS

M. Lamb 111 for &,n impro,.ed maohine for weaVing wire fences. The essential de. , vice ia a bollow needle, B.pproximately OYlin d.rioal in shape, open al.on g one side, .. and adapted to etraddlethe ':'R\rp-wiril and rotate, so as ,to wind about it the woof.

patent

issued November l2, 1889, to John W. Page and Charles

Wire, with whioh it fa threaded, fornii!ig. a knot, at the same time having a llight longitudinal reciprocating motion, to give the knot an elongated forward tWist, whioll. as stated ia"the specifioations"fa desirable because of its extreme seourity." The inv,entors state that, owing to the oomplicated nature of the meohanism, they have deemed it desirable:tO give a detailed description, but that they do not With ,to limit-their .invention to the details of construction, and that the claims are intended to 'be construed as broadly as the state of the art will permit. Claim 19 oovers"a longitudinally-slotted needle, aaopted to hold the woof. wire,and sup-ported, to rotate in its be"rinjts, SUbstantially as and for the purpose set forth." Claim 14 is the same as claim 12, ,with the pddition that the needle is to "be reoiprcoated longitudinally, · for >the purpose set forth. Held, that claim Ii covers the neeille without·,the motion to give the knot the preferred "forward twistt " and is infrInged by a device construoted under let,. terti patent No: 435,042, alii!' 18sued August 26; 1890, and which 111 essentially the lame &8 the needle, thla reoiprocating feature. ,

I. ,

BAuB-CoNSTRuOTION OJ'

A oonstruotion 'wh!.cb'wUl'l:bake two distinct claims of a patent Oover, not dUfel'ent tbings, but one and the lame thing, 1a.llobe avoided, it poseible;and, where a .device Jlerforms two operations, · claim may be. based. upon each witholl' 'covering the other. " ..' . ..' . .

In Equity. Suit by ,the Page Woven Wire-Fence Company against Abel Land for infringement: of a patent; Injunotion granted· . !'lJyrtmfrYrth et Dyrenjorth., for complainant. . . Grant FeUhw,;'8aUJOuryet O'Meaky, and M. Fe Chamblin, for defendant. JACKSON,CireuitJudge. The complainant corporation,or assignee .If the entire right, title, and interest in and to letters patent of the United States No. 414,844, granted November 12, 1889, to John W. Page and Charles M. Lamb, for a new and useful improvement in wirefence machines, brings this suit against the defendant, Abel Land, for infringement thereof. The bill, which was filed September 13, 1890, contains the averments and allegations usual in such cases, and need not be specially noticed. In his answer the defendant denies knowledge of complainant's title to said letters patent, but admits the issuance thereof at the date stated to said Page and Lamb. He denies that said pat-